Patent Drafting Strategies - ip4inno · Patent Drafting Strategies by Peter K. Hess, Partner. ......

Patent- und RechtsanwältePeter K. HessGalileiplatz 181679 München

Tel. +49 (89) 92 80 5-0Fax +49 (89) 92 80 [email protected]

Innovation Support Training Program (ISTP)Module 3 “Enforcing and Challenging Intellectual

Property Rights”

Budapest

February 26 – March 2, 2007

Patent Drafting Strategiesby

Peter K. Hess, Partner



I Introduction (Session 1)

II Preparing the Patent Filing (Session 1)

III The First Try (Session 1)

IV Exercise 1: New Patent Application “Goal Keeper

Glove” (Session 2)

V Wording the Patent Claims (Session 3)

VI Wording the Description (Session 3)

VII Exercise 2: From claim drafting to litigation (Session 4)

VIII Conclusion (Session 4)

Content of the seminar



I. Introduction

Invention

Patent = Exclusive Right

Inventor Mr. Smart

Public

Infringer

Bad patent application

Session 1

What is a good patent?

Good patent

Infringer

=> Maximize the scope of protection!

Session 1

=> The author of the patent application is responsible for the maximal protective range

„If, in an objective consideration, the patent lags behind the technical content of the invention, the protection is limited to that which can still be related to the meaning of the patent claims.“

German Supreme Court, decision of March 12, 2002 - X ZR 135/01 „Cutting knife II - Schneidmesser II“



1. Is a patent application possible?

2. Is the filing of a patent application recommendable?

3. Time frame for drafting a patent application

II. Preparing the Patent Filing

Session 1

? ? ? ? ? ?

Questions to be asked before we start with the drafting of the patent application:

a. Has the inventor himself already published the invention? Was a prototype already presented at prospective customers/at trade shows?

b. Is the potential applicant entitled to file the application?

1. Ready for filing ?

Session 1

re a.) Crisis management in case of

pre-publications/presentations:

- in patent law, the smallest time unit is a day => in case of publication in the morning, application may be filed until short before midnight

- use time difference to the U.S. => file there immediately, filepriority applications later in Germany or Europe!

- consider national or international alternatives (next page)=> don‘t abandon the whole invention immediately!

Session 1

Alternative protective rights which are possible despite inventor‘s pre-publication:

USA: Own pre-publication only prior art if more than 1 year before application day

Japan: Onyl pre-use in Japan relevant; 6-months protectionterm for novelty

Utility model in DE: only domestic pre-use in Germany relevant; 6-months protection term for novelty

Session 1

Re. b) Application entitlement:

- opposing contractual obligation of applicant?

- Unauthorized claiming!

- Employee Invention Act? Employment Contract?

Attention: Conflicting interests! Consider who the client is!

Session 1

Unauthorized claiming:

- Have inventor explain, how invention was created

- If cooperation between client and supplier, clarify exactly whoactually made the invention

- if required, transfer rights to invention by contract to have definite application entitlement

Session 1

2. Is the filing of a patent application recommendable?

- Protective right

- Publishing the Invention?

- Company secret?

Session 1

3. Time frame for drafting a patent application

- As quick as possible, even if application is first to be filed in the U.S. (first-to-invent principle), for future subsequent applications in other countries (e.g. EP) with first-to-file principle

- As late as necessary, to obtain enough details from a real working prototype

- To gain time, conclude non-disclosure agreement with clients, at least for limited period



1. Understand the invention

2. The main methods of expansion

3. Intermediary result

III. The First Try

Session 1

1. Understand the invention!

- Understand the prototype concept

- not yet considerations concerning scope of protection

- the better the inventor‘s explanations and the better the preparatory work of the patent department (if existing), the less time is required

Session 1

Don‘t start yet to draft the claims!!

instead

- Unstructured „brainstorming“ on the subject matter of the invention;

- „Dig“ like a miner for the jewels in the inventor‘s brain

Session 1

Brainstorming approaches:

- Look for and note for each term

- Don‘t cling to inventor‘s precise embodiment

Narrower wording More general term

Session 1

3. Expand the invention

1. Generalization: Replace species by genus, e.g.

- Screwed on => affixed in a torque-proof way => affixed => arranged

- Cl- => halogenide => anion

- Transistor => electrical switch => signal routing means

Session 1

2. Different claim categories

- Intermediate product – final product - application product

- New product – new use – new production method – new device

- „Sender“ and „receiver“

Session 1

Intermediate result:

Complete technical understanding of invention

Now, the patent application can be drafted!

Amorphous mass of single words, definitions, sketches, ideas, fractions of sentences

+

IV Exercise 1: New Patent Application “Goal Keeper Glove”

Inventor Mr. Smart and his goal keeper glove

Session 2

Mr. Smart:

Ow !!

- design engineer at plastic-processing company

- ambitious hobby soccer player

Session 2

Session 2

The idea emerges from a Happy Hour discussionlast night in the local of Mr. Smart:

Session 2

Having reported to his boss and having copied the drawings the following morning, Mr. Smart visits the company’s patent attorney and reports the invention.

Task:

1. What questions have to be asked Mr. Smart?

2. Set up catchword list for preparation of claim wording?

3. Draft a claim



1. Main claim

2. Dependent claims

3. Alternative Independent Claims

4. Examples for Dangerous Claim Wordings

V. Wording the Patent Claims

Session 3

Session 3

1. Main Claim

Basic situation:

- Claim has to distinguish subject matter over prior art

Main claim = generic term from prior art + one feature

Note: Definition of generic term as short and as generic as possible

- Claim defines protected subject matter = > the more logically ANDedfeatures, the smaller the scope of protection

Session 3

Integral claim or two part form?

- To start with, the integral form is preferred, since prior art is not known completely

- over course of examination procedure, change to two-part form is possible, if required!

- Why do Attorneys like the integral form?

Session 3

3 Tests for claim wording:

A. The infringer test

- Who is possible infringer? Infringement only by end consumer in private sector?

- Where does infringement take place? If claim is partially or completely only realized abroad, value of wording is doubtful.

- How does infringement take place? Exactly check product-by-processclaims and method claims.

Session 3

B. The scope of protection test:

Check for every claim feature:

- Is feature necessary and appropriate for limitation over prior art?

- Is feature sufficiently broad?

Note: Check all features, not only „new“ features (“characterized-by clause”)

Session 3

C. The provability test

Check for every claim feature:

- Can realization of feature be proven (easily)?

- Can the feature be replaced by another one with easier provability (e.g. indication of the structure instead of the generating method)?

Session 3

Examples of dangerous wordings:

- Beware of inventor‘s jargon! Always clarify whether term is generally used inthe respective technical field

- Check meaning of apparently clear words (e.g. „solvent“ or „attachment“)

- If required, define term yourself (German Federal Supreme Court: every patent application is its own dictionary)

- Beware of finite definitions such as „consisting of“. Better use openwording such as „comprising“ or „including“

Formulierung der Patentansprüche

Chances and risks of functional wordings:

- In case of basic inventions, indication of function may be the only possibility to lead to appropriate scope of protection.

- If the claim only indicates the targeted aim, the claim becomes unclearand may be far too broad.

Choose the middle: Combination of structural and functional features

Session 3

Indication of numerical ranges:

- Are all embodiments in the claimed range?

- Check whether exact definition of the feature, the range of which is claimed, is contained in description (e.g. according to DIN or ASTM)

- Is the range sufficient for limitation over prior art?

- Beware of percentages, in particular if indicating more than three components of a mixture.

- Restricted scope of protection: Doctrine of Equivalence?

Session 3

2. Dependent claims

Function: Serve as fall-back positions for examination procedure. Guide the patent office‘s search

Note: Subclaims influence interpretation of main claim!

⇒ Every subclaim should have a certain scope of protectionand be novel and inventive, if subject matter of main claim is already known

Example: Claim 1: „attachment“Subclaim „torque-proof attachment“

Claim 1 also comprisestorque-proof attachment

Session 3

3. Alternative independent claims(Independent claims of same category)

-Generally to be used rarely (contrary to U.S.), but necessary in some cases (e.g. to claim „sender“ and „receiver“)

- don‘t fear lack-of-unity objections

Session 3

4. Examples of dangerous wordings:

- Check meaning of apparently clear words (e.g. “solvent” or “attachment”)

- Beware of finite definitions such as “consisting of”. Better use open wordingsuch as “comprising” or “including”

- Beware of inventor’s jargon! Always clarify whether term is generally used in therespective technical field

- If required, define term yourself (German Federal Supreme Court: every patent application is its own dictionary)



1. What about?

2. What was known in the art?

3. Which need is addressed by the invention?

4. Advantages?

5. Keep the “best mode” secret?

6. Summary

VI. Wording the description

Session 3

Session 3

1. What about?

- Introductory sentence indicating the field to which the invention relates;substantially only serves to classify the invention

Examples:

„The invention relates to new block-copolymers, methods for their production, and catalysts used in said methods.“

„The invention relates to the CDMA telephone technology.“

- no (brief) definition of the invention at this passage!

Session 3

2. What was known in the art?

- There is no legal obligation to discuss the prior art in an application at the time of filing; it can be done later

- To create an „Aha“ effect of the reader (examiner), it may be sensible, however,to briefly explain the prior art

- Never describe prior art with terms from patent claim (deadly inthe U.S. since admission“); if required, cite prior art literally!!!

Session 3

3. Which need is addressed by the invention?

- This section is the stage on which the invention is first presented to the public; together with the explanation of the invention it is the patent application‘s „sales capital“

- Do not only word a single, narrow task; better assign specific tasks to individual embodiments of the invention:

Example:

„One of the problems of the preferred embodiment of the inventionis to obtain a high yield.“

Session 3

4. Advantages?

- No definition of invention but of embodiments. Dangerous wordings:

„the invention consist of“ or „according to the invention“

- Do not be to indistinct; explain why embodiments solve problems of the invention = > cause „Aha“ effect of reader (examiner)

- Repeat wording of the claims as continuous text to ensure complete disclosure

Session 3

4. Advantages?(continued)

- Do not highlight one claim feature as being particularly necessary, e.g. byusing the wording

„feature X is of particular relevance for the invention“

- Repeat wording of the claims as continuous text to ensure complete disclosure

- Give term definitions (not too narrow!) e.g. by tables, formulas, structograms, diagrams, chemical structural formulas etc.

Session 3

4. Advantages?(Continued)

- Create nets, i.e. build up fall-back positions. Example:

„According to the invention, the sequence of the method steps is irrelevant. However, the herein disclosed specific sequence is preferred.“

Note: Get narrower step by step. Do not explain only feature 1 after the wording of claim 1.

Session 3

4. Advantages?(continued)

- Describe existing and (reasonable) conceivable examples

- Also explain examples shown in figures additionally to ensure sufficientdisclosure

- Check whether features are covered by main claim

5. Keep the “best mode” secret?

Those who do not disclose the best embodiment of an invention (known to them),have an unenforceable patent!

Session 3

6. Summary

- Only serves for information of general public (e.g. in data bases)

- Word main claims as continuous text for summary

NEVER include a feature quickly into the summary, without including it in the description as well!!!

- Summary is not available as disclosure for later claim supplementation/restriction

VI Exercise 2: From Claim Drafting to Litigation

The Goal Keeper Glove in Litigation

Session 4

Session 4

The goal keeper glove has been really patented è DE 35 16 545 C2. Granted independent claim 1 reads as follows:

„Glove, particularly goal keeper glove, wherein the glove‘s back consists of two material layers, characterized in that the inner material layer substantially guarantees tensile strength but is flexible at least in certain surface regions of the glove‘s back, and in that the outer material layer consists of substantially pressure-resistant elements being strung together in longitudinal direction, being settled on the inner material layer in forming gaps, and in that they blockingly abut short before the glove‘s stretching position“.

Session 4

To better understand the claim, here is a feature analysis:

Glove, particularly goal keeper glove.a. The glove‘s back consists of two material layers.b. The inner material layer substantially guarantees tensile strength but is flexible

at least in certain surface regions of the glove‘s back.c. The outer material layer consists of substantially pressure-resistant elements

being strung together in longitudinal direction. d. The substantially pressure-resistant elements are settled on the inner material

layer in forming gaps in that they blockingly abut short before the glove‘s stretching position.

Only if a goalkeeper glove realizes all features a. - d., it infringes the patent claim.

Session 4

Integration of protective element against over-stretching in the glove backs in the attacked embodiments. The various fabric/plastic foam layers are numbered; layer 3 is the integrated protective element, it rests within a “pocket”

An infringing goal keeper glove (1. embodiment)?

Session 4

The “protective element” according to the first embodiment

Session 4

The “protective element” according to the second embodiment

The support element of the second attacked embodiment

Session 4

The “protective element” according to the second embodiment consists of a series of pin-jointed rigid plastic elements. The joints are made such that bending in the gripping direction is possible without resistance, however, short before the stretching position, blocking is also achieved so that the support element cannot be bent into the other direction:

???Do the first and/or the second embodiment of theattacked goal keeper gloves infringe the patent

???

Have fun!

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Patent Drafting Strategies - ip4inno · Patent Drafting Strategies by Peter K. Hess, Partner. ......

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